USPTO Patents Application 08873597

PATENT

Attorney Docket No. A-64558-1
Attorney File No.: 463037-00080

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re application of Examiner: FORMAN, Betty J.

KAYYEM et al. Art Unit: 1634

Serial No. 08/873,597

"Express Mail" Label No.:
Filed: June 12, 1997 EV 554099364US

For: AC Methods for Detection of
Nucleic Acids

SUPPLEMENTAL INFORMATION DISCLOSURE STATEMENT

AND

STATEMENT OF RELATEDNESS

Mail Stop RCE
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

Sir:

In satisfaction of the duty of disclosure under 37 C.F.R. § 1.56, and in accordance
with the provisions of 37 C.F.R. §§ 1.97 and 1.98, Applicants wish to draw the attention
of the U.S. Patent and Trademark Office to the references cited on the accompanying
form PTO/SB/8A. In accordance with 1287 Off. Gaz. Pat. Office 163, 10/19/2004, no
copies of U.S. patents and U.S. published applications are enclosed. Copies of all other
references are enclosed.

Further, in satisfaction of the duty of disclosure under 37 C.F.R. § 1.56, and as
required by M.P.E.P. § 2001.06(b), Applicant notes that the present application is related
to the following pending patent applications:

Serial No.: 08/873,597
Filed: June 12, 1997

1. U.S.S.N. 08/873,978, filed June 12, 1997; U.S.S.N. 09/557,577, filed
April 21, 2000;

2. U.S.S.N. 08/873,597, filed August 14, 1997;

3. U.S.S.N. 09/135,183, filed August 17, 1998;

4. U.S.S.N. 09/452,277, filed December 3, 1999;

5. U.S.S.N. 09/440,371, filed November 12, 1999; U.S.S.N. 09/712,792,
filed November 13, 2000;

6. U.S.S.N. 09/295,691, filed April 21, 1999; U.S.S.N. 1 1/043,515, filed
January 25, 2005;

7. 1 0/746,903, filed December 23, 2003;

8. U.S.S.N. 09/245,105, filed January 27, 1999;

9. U.S.S.N. 09/626,096, filed July 26, 2000;

10. U.S.S.N. 09/760,384, filed January 11, 2001; U.S.S.N. 09/993,342, filed
November 5, 2001; and

11. U.S.S.N. 10/803,166, filed March 16, 2004.

Nothing herein shall constitute an admission concerning the contents of any of the
cited references, nor shall the inclusion of a reference herein be considered an admission
that the reference constitutes prior art against the invention claimed in the above-
identified application. Submission of the present document shall not be construed as an
admission that a search has been made or that better art does not exist.

As far as is known to the undersigned, this Information Disclosure Statement is
being filed before the mailing of a first office action following a Request for Continued
Examination under § 1.114 and therefore no fee is required. While no fee is believed to

1168600_1

2

Serial No.: 08/873,597
Filed: June 12, 1997

be due, if this belief is in error, the Commissioner is authorized to charge any additional
fees which may be required, or credit any overpayment to Deposit Account No. 50-2319
(File No.: 463037-00080; Docket No.: A-64558-1).

Please direct further questions in connection with this Application to the
undersigned at (415) 781-1989.

Respectfully submitted,
DORSEY & WHITNEY LLP

Dated: b 7>0 0$ By: /

Customer No\: 32940 Robin/M. Silva, Reg. No. 38,304

Four Embarcadero Center

Suite 3400 Filed Under 37 C.F.R. § 1.34

San Francisco, C A 94 1 1 1 -4 1 87
Telephone: (415) 781-1989
Facsimile: (4 15) 398-3249

Attachments: Form SB/08/A-B, substitute for Form PTO-1449

1168600_1

3

Substitute PTO/SB/08A (08-03)
U.S. Patent and Trademark Office: U.S. DEPARTMENT OF COMMERCE.

f w 1

5>v .OK/ Substitute for form 1449A/PTO
TR^^ (Modified)

INFORMATION DISCLOSURE
STATEMENT BY APPLICANT

(use as many sheets as necessary)

Complete if Known

Application Number

08/783,597

Filing Date

June 12, 1997

First Named Inventor

KAYYEM, Jon F.

Art Unit

1634

Examiner Name

FORMAN, Betty J.

Sheet

1 of 1

Attorney Docket Number

A-64558-1 (463037-00080)

U.S. PATENT DOCUMENTS

Examiner
Initials*

Cite No. 1

Document Number
Number-Kind Code 2 (tf Known)

Publication Date
MM-DD-YYYY

Name of Patentee or Applicant of Cited
Document

Pages, Columns, Lines, Where Relevant
Passages or Relevant Figures Appear

A1

5,824,473

10-20-1998

Meade et al.

A2

6,265,155 B1

07-24-2001

Meade et al.

A3

6,290,839 B1

09-18-2001

Kayyem et al.

A4

6,291,188 B1

09-19-2001

Meade et al.

A5

6,432,723 B1

08-13-2002

Plaxco et al.

A6

6,479,240 B1

11-12-2002

Kayyem et al.

A7

6,495,323 B1

12-17-2002

Kayyem et a!.

A8

6,528,266 B2

03-04-2003

Meade et al.

A9

6,686,150 B1

02-03-2004

Blackburn et al.

A10

6,740,518 B1

05-24-2004

Duong et al.

FOREIGN PATENT DOCUMENTS

Examiner
Initials*

Cite No. 1

Foreign Patent Document
Country Code 2 Number 4 Kind Code 5
(if known)

Publication Date
MM-DD-YYYY

Name of Patentee or Applicant of Cited
Document

Pages, Columns, Lines, Where
Relevant Passages or Relevant
Figures Appear

T 6

81

NON PATENT LITERATURE DOCUMENTS

Examiner
Initials*

Cite No. 1

Include name of the author (in CAPITAL LETTERS), title of the article (when appropriate), title of the item (book, magazine, journal, serial, symposium,
catalog, etc.), date, page(s), volume-issue numbers), publisher, city and/or country where published.

C1

Examiner

Date

Signature

Considered

'EXAMINER: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not in conformance and not
considered. Include copy of this form with next communication to applicant.

applicant's unique citation designation number (optional). 2 See Kinds Codes of USPTO Patent Documents at www.uspto.gov or MPEP 901.04. 3 Enter Office
that issued the document, by the two-letter code (WIPO Standard ST.3). 4 For Japanese patent documents, the indication of the year of the reign of the Emperor
must precede the serial number of the patent document. 5 Kind of document by the appropriate symbols as indicated on the document under WIPO Standard ST.
16 if possible. 6 Applicant is to place a check mark here if English Language Translation is attached.

This collection of information is required by 37 CFR 1.97 and 1.98. The information is required to obtain or retain a benefit by the public which is to file (and by the
USPTO to process) an application. Confidentiality governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 2 hours to complete,
including gathering, preparing, and submitting the complete application form to the USPTO. Time will vary depending on the individual case. Any comments on
the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and
Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO:
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

If you need assistance in completing this form, call 1-800-PTO-9199 (1-800-786-9199) and selection option 2

1168598_1.DOC